508    Distribution [R-2]

All applications filed on or after June 30, 2003, are electronically scanned and loaded into the Image File Wrapper (IFW) system. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.

For handling of models, exhibits, and specimen, see MPEP § 608.03 and § 608.03(a).

508.01   Papers Sent to Wrong Technology Center (TC) [R-2]

If drawings, amendments, or other papers are delivered to the wrong TC, the TC to which this application is assigned should be obtained from PALM and be placed on the paper and then forwarded to the appropriate TC. The TC to which the application is assigned as indicated by PALM may be verified by calling the TC as indicated before forwarding the paper. For Image File Wrapper (IFW) processing, see IFW Manual.

508.02   Papers Received After Patenting or Abandonment [R-2]

After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender by the Technology Center. For Image File Wrapper (IFW) processing, see IFW Manual.

508.03   Unmatched Papers [R-8]

For Image File Wrapper (IFW) processing, see IFW Manual. Effective December 1, 2003, no official paper which relates to a pending application may be personally delivered to a Technology Center (TC) except papers that are directed to an application subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified and that are directed to Licensing and Review. See MPEP § 502. Unmatched papers for nonprovisional applications (maintained in paper application files) within a TC should be frequently reviewed to determine which should be sent to the Paper Correlating Office (PCO).

Item I below treats the papers in the "Application number too high" category. Items II-VI below are directed to all other unmatched papers not in the "Application number too high" category.

I.   UNMATCHED PAPERS IN THE "APPLICATION NUMBER TOO HIGH" CATEGORY

This collection of papers being held by the TC should be reviewed at least once a week. Any paper having an application number which clearly should have already been received by the TC should be removed from this collection. Where the TC does not have a corresponding application for any of these papers, inquiry should be made of the Office of Patent Application Processing (OPAP) to determine the TC of record. If another TC number is indicated, the paper should be forwarded to that TC. If OPAP does not yield a new TC number for the indicated application number, the paper should be sent to the PCO.

II.   UNMATCHED PAPERS HAVING AN APPLICATION NUMBER

It can be assumed that either the TC number or the application number on these papers is incorrect. Inquiry should be made of the OPAP and PALM to determine the TC of record and the procedure set out in paragraph I above followed. An exception to this practice should be made where the paper has thereon the name of an examiner in the TC. In these situations, a careful check of the TC records and files as well as consultation with the indicated examiner should be made to determine the correct application number. If this does not yield a new application number, the paper should be sent to the PCO.

III.   UNMATCHED PAPERS RELATING TO APPLICATIONS ABANDONED FROM TC

The application file should be ordered from Files Repository. If the file is not received therefrom, the paper should be forwarded to the PCO.

IV.   PAPERS FOR APPLICATIONS WHICH HAVE BEEN SENT TO THE OFFICE OF DATA MANAGEMENT

All papers for applications which PALM indicates to be located in any of the locations 7400 through 7650 should be forwarded to the Office of Data Management.

The instructions of this paragraph (IV) apply to all files in issue including those which have been assigned a patent number and issue date. Papers requiring examiner review and action will be returned to the TC after the Office of Data Management personnel have matched the paper to the appropriate file.

V.   PAPERS FOR APPLICATIONS WHICH HAVE BEEN SENT TO THE FILE INFORMATION UNIT (RECORD ROOM)

If PALM indicates that the application to which a paper relates is in the File Information Unit (Record Room) (location code 9210), the paper should be forwarded to the PCO for response.

VI.   UNMATCHED PAPERS FOR APPLICATIONS WHICH ARE KNOWN TO BE PENDING IN THE TC BUT CANNOT BE LOCATED

Generally, these are applications which PALM indicates are present in the TC, but the file is not available. These papers should be retained in the TC for processing.

Each paper sent to the PCO must have a PCO Transmittal Form stapled thereto. Each form attached to a paper should be filled out as completely as possible. Transmittal Forms attached to papers of the type described in paragraph I and paragraph II above must have an indication of the information obtained from both OPAP and PALM. The PALM information should be inserted in the large space at the bottom of the form. This will help eliminate duplication of effort by PCO personnel. Papers received without transmittal forms or with incompletely filled out transmittal forms may be returned to the originating TC.

508.04   Unlocatable Patent or Application Files [R-8]

37 C.F.R. 1.251   Unlocatable file.

  • (a) In the event that the Office cannot locate the file of an application, patent, or other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.
    • (1) Applicant or patentee may comply with a notice under this section by providing:
      • (i) A copy of the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents);
      • (ii) A list of such correspondence; and
      • (iii) A statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
    • (2) Applicant or patentee may comply with a notice under this section by:
      • (i) Producing the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and
      • (ii) Providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
    • (3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
  • (b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.

37 CFR 1.251  sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search. The phrase "an application" in 37 CFR 1.251  applies to any type of application (national or international), and regardless of the status (pending or abandoned) of the application.

37 CFR 1.251(a)  provides that in the event the Office cannot locate the file of an application, patent, or any other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice. The applicant or patentee may comply with a notice under 37 CFR 1.251  by providing: (1) a copy of his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents); (2) a list of such correspondence; and (3) a statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records (37 CFR 1.251(a)(1) ). The applicant or patentee may also comply with a notice under 37 CFR 1.251  by: (1) producing his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and (2) providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records (37 CFR 1.251(a)(2) ). If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee must comply with a notice under 37 CFR 1.251  by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(3) ).

According to 37 CFR 1.251(a), if the applicant or patentee possesses all or just some of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee is to reply by providing a copy of (or producing) his or her record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(1)  or (a)(2)). If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee is to reply with a statement to that effect (37 CFR 1.251(a)(3) ).

If an applicant or patentee decides to produce his or her record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding for copying by the Office under 37 CFR 1.251(a)(2)  (rather than provide a copy under 37 CFR 1.251(a)(1) ), the record should be brought to the Customer Service Center in the Office of Patent Application Processing (OPAP).

The Office will set a time period of three months for reply in a notice under 37 CFR 1.251  in an application. The time period will be extendable under 37 CFR 1.136(a)  (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application. See 35 U.S.C. 133. If, however, an applicant fails to reply to a notice under 37 CFR 1.251  within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b)  will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251  and ending on the date the reply to the notice under 37 CFR 1.251  was filed. See 35 U.S.C. 154(b)(2)(C)(ii)  and 37 CFR 1.704(b). The Office will set a time period of six months for reply in a notice under 37 CFR 1.251  in a patent. The time period will not be extendable under 37 CFR 1.136(a)  in a patent because 35 U.S.C. 41(a)(8)  only authorizes the Office to charge fees for extensions of time in proceedings involving an application.

37 CFR 1.251 generally applies only to situations in which the file of an application or patent (not just certain documents) is unlocatable. When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document. While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251 ), the Office may issue a notice under 37 CFR 1.251  to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful. The notice under 37 CFR 1.251  will include a printout of the contents entries from the Office’s PALM system.

Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application. Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.

37 CFR 1.251(b)  provides that with regard to a pending application, the failure to provide a reply to such a notice within the time period set in the notice will result in abandonment of the application. While abandonment (or expiration or lapse) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent). In addition, if the patent is involved in a proceeding before the Office, the Office may take action under 37 CFR 41.128  or 37 CFR 11.18  .